Shoedazzle.com, Inc. v. Staci Michele
Claim Number: FA1405001557072
Complainant is Shoedazzle.com, Inc. (“Complainant”), represented by Citizen-Hawk, Inc., California, USA. Respondent is Staci Michele (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shoedizzle.com>, which is registered with FABULOUS.COM PTY LTD.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on May 1, 2014; the National Arbitration Forum received payment on May 1, 2014.
On May 1, 2014, FABULOUS.COM PTY LTD. confirmed by e-mail to the Nation-al Arbitration Forum that the <shoedizzle.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 7, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@shoedizzle.com. Also on May 7, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as techni-cal, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 29, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Not-ices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Since its founding in 2008, Complainant has continuously used the service mark SHOEDAZZLE to market its on-line shoe club ordering services featuring design-er shoes, personal fashion consulting services, and news and information in the field of fashion.
Complainant holds a registration for the SHOEDAZZLE service mark, which is on file with the United States Patent and Trademark Office (“USPTO”), as Registry No. 3736740, registered January 12, 2010.
Respondent registered the <shoedizzle.com> domain name on or about Feb-ruary 17, 2010.
The domain name is confusingly similar to Complainant’s SHOEDAZZLE mark.
Respondent has not been commonly known by the subject domain name.
There is no association between Respondent and Complainant or its SHOE-DAZZLE mark.
Respondent’s employment of the domain name is not in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use.
The domain name resolves to a generic pay-per-click advertisement website which features links to the websites of Complainant’s commercial competitors.
Respondent lacks both rights to and legitimate interests in the domain name.
Respondent is a recalcitrant cyber-squatter.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent seeks to profit from its use of the domain name by creating confus-ion among Internet users as to the possibility of an association between the do-main name and Complainant.
Respondent’s registration of the <shoedizzle.com> domain name is an instance of typo-squatting.
Respondent’s registration and use of the domain name are in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the SHOEDAZZLE service mark for purposes of Policy ¶ 4(a)(i) by reason of registration of the mark with a national trademark authority, the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO adequate to establish rights in a mark pursuant to Policy ¶ 4(a)(i)).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <shoedizzle.com> domain name is con-fusingly similar to Complainant’s SHOEDAZZLE service mark. The domain name contains the mark in its entirety, making only a single-letter change of spelling and affixing the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a tendency to be confusingly similar to the mark).
See also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to the mark of another in creating a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <shoedizzle.com> do-main name, and that there is no association between Respondent and Complain-ant or its SHOEDAZZLE mark. Moreover, the WHOIS record for the domain name identifies the registrant only as “Staci Michele,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), a panel there finding no rights to or legitimate interests in a domain name under Policy ¶ 4(c)(ii) where there was no association between a respondent and the holder of the mark on which the domain name was based, and where there was no evidence showing that that respondent had ever been commonly known by the domain name.
We next observe that Complainant asserts, without objection from Respondent, that the <shoedizzle.com> domain name resolves to a generic pay-per click ad-vertisement website featuring links to the websites of Complainant’s commercial competitors from the operation of which resolving website Respondent seeks to profit. This use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that a respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the business of a UDRP complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent has been a respondent in multiple UDRP proceedings in which it has been found to have registered and used in bad faith domain names which were confusingly similar to the marks of various complainants. See Fair Isaac Corp. v. Staci Michele, FA 1486147 (Nat. Arb. Forum Mar. 30, 2013); Vivo Per Lei, Inc. d/b/a Orogold Cos-metics v. Staci Michele, FA 1484539 (Nat. Arb. Forum Apr. 1, 2013). Under Policy ¶ 4(b)(ii), such a pattern of cyber-squatting is evidence that Respondent registered and uses the instant domain name in bad faith. See, for example, Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005).
We are also convinced by the evidence that Respondent’s employment of the <shoedizzle.com> domain name as alleged in the Complaint disrupts Complain-ant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of bad faith in the registration and use of the do-main name. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iii) by using contested domain names to operate a commercial search engine with links to websites offering the products of a UDRP complain-ant’s commercial competitors).
In addition, the evidence shows that Respondent employs the <shoedizzle.com> domain name to seek to profit from confusion caused among Internet users as to the possibility of an affiliation between the domain name and Complainant. Under Policy ¶ 4(b)(iv), this too demonstrates bad faith in the registration and use of the domain name. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003):
Respondent's … use of the … domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’
Finally under this head of the Policy, it is evident that Respondent’s registration of the <shoedizzle.com> domain name is an act of typo-squatting, i.e.: the registration of a domain name which is formed by taking advantage of common typographical errors made by Internet users in entering into web browsers the names of mark holders with which they wish to do business. Typo-squatting is independent evidence of bad faith in the registration of a domain name. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005): “Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] … mark.”
For all of these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is, hereby, GRANTED.
Accordingly, it is Ordered that the <shoedizzle.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 4, 2014
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